March 23

WIPO
Arbitration and
Mediation
Center Case 2010
AKSHAT JAIN

428, Telecom

MBA Tech, 4th Year

WIPO Arbitration and Mediation Center Case

1. The Parties

The Complainant is Emirates Corporation, of Dubai, United Arab Emirates, represented by

Baker & McKenzie, Hong Kong, SAR of China.

The Respondent is 2220 Internet Coordinator, of Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <emiratescareers.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on
December 19, 2005. On December 20, 2005, the Center transmitted by email to eNom a
request for registrar verification in connection with the domain name at issue. On December
21, 2005, eNom transmitted by email to the Center its verification response confirming that
the Respondent is listed as the registrant and providing the contact details for the
administrative, billing, and technical contact. The Center verified that the Complaint satisfied
the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the
“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and
the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the
“Supplemental Rules”).

In accordance with the Rules, the Center formally notified the Respondent of the Complaint,
and the proceedings commenced on January 4, 2006. In accordance with the Rules, the due
date for Response was January 24, 2006. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on January 26, 2006.

The Center appointed Debrett Lyons as the Sole Panelist in this matter on February 2, 2006.
The Panel finds that it was properly constituted. The Panel has submitted the Statement of
Acceptance and Declaration of Impartiality and Independence, as required by the Center to
ensure compliance with the Rules, paragraph 7.

4. Factual Background
The Complainant is the middle eastern based airline known as Emirates Airlines which was
set up in 1985 by the government of Dubai. Since then, the Complainant has become known
as the official international carrier of the United Arab Emirates now flying to over 75
destinations around the globe.

The Complainant has registered the plain word mark EMIRATES in the United States under
trademark registration 2495959 dated October 9, 2001. Additionally, the Complainant has
numerous other registrations around the world for trademarks that include the word
EMIRATES.

The Complainant recruits through various means including through advertisements on its
website located at “www.emiratesgroupcareers.com”.

The disputed domain name was registered on September 7, 2003. An active portal style
website exists at “www.emiratescareers.com”.

The Complainant petitions the Panel for an order for transfer of the domain name to it.

There is no evidence provided of pre Complaint correspondence between the parties.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the
trademark EMIRATES in which it has rights. It argues that whilst the word “Emirate” means
a country ruled by an Emir, the word “Emirates” is exclusively associated with the
Complainant due to its substantial trading and promotional activities under that name.

Through its registration and use of the word EMIRATES as a trademark, and through
operation of its “www.emirates.com” website, the Complainant argues that it has rights in the
single word trademark EMIRATES. In addition, through the use of the name on its
“www.emiratesgroupcareers.com” website, it is said that the Complainant has also accrued
rights in the expression “Emirates Group Careers”.

The Complainant submits that consumers seeing the domain name <emiratescareers.com>
would be confused or misled into believing that it would refer to a website operated by the
Complainant.

The Complainant goes on to argue that the Respondent has no rights or legitimate interest in
the disputed domain name since the corresponding website does not perform any function
other than to provide links to further websites which advertise goods and services. Those
links change from time to time but the Respondent’s website has regularly featured links to:

Emirates Airline Jobs. Following this link takes the internet user to a page displaying
“sponsored links” for the Dubai Employment Centre, the Flight International Jobs website
and a “work at home” website, none of which are websites operated by Complainant;

Jobs in Dubai;

Emirates Airline. This takes the Internet user to a page that includes “sponsored links” for the
Dubai Employment Centre and airline ticket sales at “123 airline tickets.com”;

Airline Jobs. This takes the user to a page that includes “sponsored links” for schools and
recruitment sites not associated with Complainant;

Adult content websites.

The Complainant argues that the Respondent’s use of the disputed domain name to link to its
advertising clients, which could be the Complainant’s competitors, is not indicative of a
legitimate or bona fide use and that the Respondent’s choice to register the disputed name is
motivated by a desire to divert users from the Complainant’s site for the Respondent’s
commercial gain. As such, the Respondent has no rights or legitimate interests in respect of
the disputed domain name.

Finally, the Complainant contends that the domain name was registered in bad faith and is
being used in bad faith. The Complainant submits that it is inconceivable that the
Respondent, who has arranged or allowed links to airline related websites on its site, was
unaware of the Complainant’s rights in the EMIRATES mark at the time it registered the
domain name.

The Complainant submits that the Respondent’s provision of links to websites in the United
Arab Emirates does not entitle it to use the word “emirates”. “Emirates” has taken on a
secondary meaning as being associated with Complainant. The word would be taken by
consumers to be a reference to Complainant and not to the United Arab Emirates which are
normally abbreviated to “UAE”.

The Respondent’s use of the disputed domain name in such a way to divert users from
Complainant’s site to its own website for its own commercial gain, at the possible expense of
the Complainant, is clear evidence that the disputed domain is also being used in bad faith.

Use of the disputed domain name is disruptive to the Complainant’s business. The
Complainant has registered the domain name <emiratesglobalcareers.com> for its careers
website. Were it not for the disputed domain name, the Complainant would be able to register
<emiratescareers.com> as its own domain name.
The Respondent’s website provides links to sites that are not associated with the
Complainant. Consumers would be diverted to online ticketing sites and competitor airlines,
diverting customers away from the Complainant’s services.

In the past, the Complainant has noted that the Respondent has included links to adult sites
which customers of the Middle Eastern airline may consider to be highly offensive.

Moreover, the Complainant goes on to argue that even if the Respondent had not used the
disputed domain name to divert internet users to an active website, its actions would still
constitute registration and use in bad faith since the domain name contains a mark that is so
obviously indicative of the Complainant’s products and services that any use of it would
inevitably lead to confusion of some sort.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

It is the responsibility of the Panel to consider whether the requirements of the Policy have
been met, regardless of the fact the Respondent failed to submit a reply. According to
paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in
which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Having considered the Complainant’s case and the available evidence, the Panel finds the
following:

Identical or Confusingly Similar

The Panel has no hesitation in finding that the disputed domain name is confusingly similar
to a registered trademark in which the Complainant has rights. The Panel accepts the
Complainant’s evidence that the word EMIRATES has acquired a secondary significance and
connotes the Complainant more so than it does the region known as the United Arab
Emirates. The gTLD, “.com”, can be ignored for the purpose of this comparison as trivial and
so there only remains the descriptive word “careers” which does nothing to dispel the mental
association with the Complainant and, given the nature of the Complainant’s business, serves
simply to reinforce that connection.
Accordingly, the Panel finds that the Complainant has met the first requirement of the Policy.

Rights or Legitimate Interests

On the available evidence, the Panel is of the opinion that the only respectable argument
which the Respondent might have relied upon, had it submitted a response, is that the word
EMIRATES is a legitimate and commonly understood shorthand for matters connected with
the United Arab Emirates and that the Respondent offers some kind of recruitment/career
advice service in that region. However, absent any evidence of that matter from the
Respondent, and in the face of a convincing counter argument by the Complainant, the Panel
finds this not to be so in the present case.

Coupled with the earlier finding that the word EMIRATES has come through use and
reputation to indicate the Complainant’s business, there are few ways in which the
Respondent could legitimately use the disputed domain name or prove its own right to the
name. As stated in prior UDRP decisions, any such use would require the utmost bona fide
character. Here, the Respondent has shown no such character by having previously linked its
website to others featuring pornographic material and by simply linking to sites which are at
risk of adversely impacting on the commercial interests of the Complainant.

The Panel therefore finds that the Complainant has satisfied the second limb of the Policy.

Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out the following circumstances which if found by the Panel
to be present shall be evidence of the registration and use of a domain name in bad faith for
the purposes of paragraph 4(a)(iii) of the Policy.

(i) circumstances indicating that you have registered or you have acquired the domain name
primarily for the purpose of selling, renting, or otherwise transferring the domain name
registration to the complainant who is the owner of the trademark or service mark or to a
competitor of that complainant, for valuable consideration in excess of your documented out
of pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or
service mark from reflecting the mark in a corresponding domain name, provided that you
have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business
of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial
gain, Internet users to your website or other on line location, by creating a likelihood of
confusion with the complainant’s mark as to the source, sponsorship, affiliation, or
endorsement of your website or location or of a product or service on your website or
location.

In this case, there is evidence that the Respondent’s behaviour is circumscribed by paragraph
(iv) above. The Panel decides that the use and registration of the disputed domain name are in
bad faith and accordingly that the Complainant has met the third and final requirement of the
Policy.

7. Decision

For all the foregoing reasons, the Panel ordered that the domain name,
<emiratescareers.com>, be transferred to the Complainant.